Ex Parte Scibora

Board of Patent Appeals and Interferences

Nov 25, 2008

10090906 (B.P.A.I. Nov. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCO SCIBORA
____________

Appeal 2008-3891
Application 10/090,906
Application Technology Center 3600
____________

Decided: November 25, 2008
____________

Before, HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 10, 19, 20 and 21. Claims 1-9, 11-18, 22-29 are withdrawn
from consideration.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2008-3891
Application 10/090,906

2
SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims an apparatus in which retail shoppers are able to "mark"
music CD(s), DVD videos, games, etc. while sampling a music CD or viewing
DVD videos and games. (Specification 2:2-4)

Claim 10, reproduced below, is representative of the subject matter on
appeal.

10. Apparatus for allowing a consumer to digitally mark portions of media
content and later retrieve the marked portions uniquely keyed to that consumer,
comprising:
a. storage for storing the media content;
b. a server computer accessing the media content storage;
c. a workstation interacting with the server computer to allow the consumer
to sample portions of the stored media content;
d. a plurality of portable identification means identifying the consumer,
separate from the server and the workstation and the sampled portions, and
including identifying indicia unique to each instance of the portable identification
means, the portable identification means being presented to the workstation; and
e. an array containing references to the identifying indicia received from
the workstation and indicia keyed to selected instances of the sampled portions
of the stored media content.

Appeal 2008-3891
Application 10/090,906

3

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Ritz US 2003/0109944 A1 Jun. 12, 2003

Kaplan 5,237,157 Aug. 17, 1993

The following rejection is before us for review.
1. The Examiner rejected claims 10, 19, 20, and 21 as obvious under 35
U.S.C. § 103(a) over Ritz in view of Kaplan.

ISSUE
Has the Appellant shown that the Examiner erred in rejecting claims 10, 19,
20, and 21on appeal as being unpatentable under 35 U.S.C. § 103(a) over Ritz in
view of Kaplan on the grounds that it would be obvious to use the identification
bar code on the access card disclosed in Kaplan as a means for identifying the user
in Ritz?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that Ritz discloses

…a. storage for storing the media content (FIG 1); b. a
server computer accessing the media content storage
(FIG 1); c. a workstation interacting with the server
computer to allow the consumer to sample portions of the
stored media content (FIG 1); [and that] Ritz teaches
Appeal 2008-3891
Application 10/090,906

4
collecting identifying information from a user in order to
track their usage habits… . (Answer 3).

2. The Examiner found that Ritz does not
…specifically mention that the identifying information is
received on a portable identification means. Kaplan
teaches providing a barcode unique to the user to identify
the user during a session (col. 5, l. 30-40). It would have
been obvious to a person having ordinary skill in the art
at the time of the invention to include in Ritz, identifying
information received on a portable identification, because
this would allow for quick identification of a user who is
not using their own personal device and allowed access
to the previews program. (Answer 3, 4).

3. Ritz discloses a registration process whereby
[t]he relationship of end users 500 with the service
provider/platform 100 may begin with a registration
process, in some embodiments. End-users 500 may
register with platform 100 through hub site 101. For
example, with reference to FIG. 2, an end user may be
presented with an offer 210 (e.g., sent via electronic mail
or presented on a web page via a pop-up window or other
advertisement) to subscribe to the service. Registration
with the service may include, among other things,
providing end user identification information 211 and
billing information 212, setting a preferred broadcaster
214 (e.g. a favorite radio or TV station), providing
information that indicates a usual locality 216 (e.g. a zip
code), indicating a preferred type of media player 215
(e.g. CD or .mp3), indicating a preferred type of audio
clip player 218 (e.g. RealPlayer), and/or indicating a
preferred user device 220. End user 500 may be required
Appeal 2008-3891
Application 10/090,906

5
to purchase a subscription for the inventive service (e.g.
$XX.XX per a certain number of tracks selected per
month).
4. Ritz discloses that once an end user registers with the platform 100 (Ritz,
¶[0020],)
… a consumer, while browsing in a store, scans the UPC
code on the back of several CD jewel boxes. The codes
are then uploaded to platform 100 via hub site 101 via a
workstation connected to the Internet. The codes may be
uploaded automatically upon scanning if the scanner is
an Internet-connected device. The codes may also be
uploaded automatically upon synching a code storage
device with an device connected to the Internet upon
navigation to hub site 101. Regardless of the type of
upload procedure, the uploaded codes are stored, in the
preferred embodiment, in platform 100.
(Ritz,¶[0021]).
5. Ritz discloses matching data submitted by the end user at registration with
suggestions the service provider makes to the user based on the registration data,
e.g., “…the end user may have indicated a zip code with platform 100 upon
registration. In this embodiment, the pull down menu 401 might contain broadcast
stations associated with the zip code entered.” (Ritz, ¶[0019]).
6. Ritz discloses using, inter alia, a scanning device to allow a user to input
codes and other information into the system. (Ritz, ¶[0017]).
7. Ritz discloses “[i]t would be beneficial to combine the bar code scanning
and other coding technology and web service application technology (in particular,
Appeal 2008-3891
Application 10/090,906

6
as it relates to music applications) in order to create media upon which a
customized selection of audio tracks are recorded.” (Ritz, ¶[0003]).

8. Kaplan discloses:
[e]ach customer can complete a brief membership
application which asks for basis demographic
information, general music listening preferences and
buying habits and an access card will then be generated
for that subscriber. Each subscriber will have a barcode
on their access card which will immediately identify
them when beginning a session on the kiosk station 10.
The subscriber identification can be further interfaced
with the music store cash register so that with each music
purchase following CD preview, the transaction will be
identified as a kiosk-related sale.

PRINCIPLES OF LAW
The patentably consequential weight to be given limitations appearing in a
preamble depends on whether, after careful consideration of the whole claim, the
preamble limits the claim. “In considering whether a preamble limits a claim, the
preamble is analyzed to ascertain whether it states a necessary and defining aspect
of the invention, or is simply an introduction to the general field of the claim. In
Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951), the court aptly described the
inquiry as whether the preamble is ‘necessary to give life, meaning and vitality to
the claims or counts.’” On Demand Machine Corp. v. Ingram Industries, Inc., 442
F.3d 1331, 1343 (Fed. Cir. 2006).
Appeal 2008-3891
Application 10/090,906

7
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject matter pertains.’”
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739,
and discussed circumstances in which a patent might be determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S. at 12 (emphasis added)), and
reaffirmed principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no
more than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
Appeal 2008-3891
Application 10/090,906

8
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art elements
according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after Graham
[that] illustrate the application of this doctrine.” Id. at 1739. “In United States v.
Adams, … [t]he Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a predictable
result.” Id. at 1739-40. “Sakraida and Anderson’s-Black Rock are illustrative – a
court must ask whether the improvement is more than the predictable use of prior
art elements according to their established function.” Id. at 1740.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in
Appeal 2008-3891
Application 10/090,906

9
the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent
reason to combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness”)).
However, “the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”
ANALYSIS
We affirm the rejection of claims 10, 19, 20, and 21.
The Appellant does not provide a substantive argument as to the separate
patentability of claims 19, 20 and 21. Therefore, we address only claim 1. We
thus also affirm the rejections of claims 19, 20 and 21 since Appellant has not
challenged such with any reasonable specificity (see In re Nielson, 816 F.2d 1567,
1572 (Fed. Cir. 1987)).
The Appellant argues “Ritz does not indicate what means could be used
for identifying a user. Thus, Ritz does not disclose a plurality of portable
identification means identifying the consumer separate from the server and the
workstation and the sampled portions.” (Appeal Br. 4). That argument is not well
Appeal 2008-3891
Application 10/090,906

10
taken because the Appellant is attacking the references individually when the
rejection is based on a combination of Ritz and Kaplan, and the Examiner relies on
Kaplan, and not Ritz, to teach a portable identification means (FF 2,8). See In re
Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981); In re Young, 403
F.2d 754, 757-58, 159 USPQ 725, 728 (CCPA 1968). This point aside, Ritz
discloses registering the end user with the service provider (FF 3), and thus Ritz
discloses a means for identifying a user. Furthermore, Ritz discloses using the
identification data submitted by the end user at registration to match suggestions
the service provider makes to the user based on the registration data whereby the
registration data is used by the service provider to identify the user and then tie
suggested products to the user (FF 5).
The Appellant seeks credit for the preamble of claim 10 as a limitation
reciting “for allowing a consumer to digitally mark portions of media content and
later retrieve the marked portions uniquely keyed to that consumer….” (Appeal
Br. 5). However, when claim 10 is considered as a whole, it becomes evident that
the preamble is simply an introduction to the general field of the claim. Nothing in
the ensuing body portion of claim 10 makes reference to later retrieving marked
portions of media so as to breathe life and breath into these preamble terms. In
light of the breadth of the claim, the Appellant’s argument is not persuasive as to
error in the rejection.
Notwithstanding, even if these preamble terms were integrated into the body
of claim 10 enough to be creditable as limitations, we conclude that a person with
ordinary skill in the art would understand that the registration data in Ritz which
Appeal 2008-3891
Application 10/090,906

11
ties suggested products to the user identification (FF 3,4,5), would similarly allow
the hub site 101 to later retrieve the selections previously uploaded to it by using
the identification data of the user to associate the selections with the user.
Finally Appellant argues that “[f]urther, there is no motivation disclosed
in Ritz to make such identifying information portable. As stated above, the
motivation to combine references must be found in the prior art. If not found in the
prior art, the Examiner must supply a cogent reason for making the combination,
not based on the applicant's disclosure.” (Appeal Br. 5). First, to the extent
Appellant is looking for an explicit motivation, suggestion, or teaching in the art,
this rigid test has been foreclosed by the Supreme Court’s holding in KSR Int’l Co.
v. Teleflex Inc., 127 S. Ct. 1727 (2007). In KSR, the Court characterized the
teaching, suggestion, motivation test as a “helpful insight” but found that when it is
rigidly applied, it is incompatible with the Court’s precedents. KSR, 127 S. Ct. at
1741. The holding in KSR makes clear that it is no longer absolutely necessary to
find motivation in the references themselves. See KSR, 127 S. Ct. at 1741.
Second, Ritz encourages the use of bar code scanning to create media based
on custom selection of audio tracks (FF 7), but does not use bar codes in
connection with user identification of the custom selections (FF 2). Kaplan
discloses registering a user for use in a music transfer application, and then
assigning a bar code symbol connected to that user registration to allow the user
access the system and to identify the user to the system (FF 8). Thus, the need
addressed by Ritz is answered by Kaplan’s use of bar codes to identify the user in
custom music transfer situations. “Under the correct analysis, any need or problem
Appeal 2008-3891
Application 10/090,906

12
known in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.” KSR at
1742. Appellant’s argument is thus not persuasive as to error in the rejection.

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 10, 19, 20, and 21on appeal as being unpatentable under 35 U.S.C.
§ 103(a) over Ritz in view of Kaplan on the grounds that it would be obvious to
use the identification bar code on the access card disclosed in Kaplan as a means
for identifying the user in Ritz.
DECISION
The decision of the Examiner to reject claims 10, 19, 20 and 21 is
AFFRIMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

JRG

BRIGGS AND MORGAN P.A.
2200 IDS CENTER
80 SOUTH 8TH ST
MINNEAPOLIS, MN 55402